Trademarks are identified with the trade of a person or entity. It is a distinctive mark which helps to identify and differentiate the goods and services of one person to another. This mark is displayed on the goods or services by its proprietor (owner) to help customers identify his products or services. It helps the owner of the trademark to gain business, as customers come in search of his products specifically.
To have ownership over a particular trademark, the proprietor who is using the mark has to get it registered from the Registrar of Trademarks (“Registrar”). Once registered, it is valid for ten years, and no other person can put the same mark as his on their goods or services.
Trademarks can be assigned, merged and transmitted under The Trademarks Act, 1999 (“Act”). Trademarks are transferred to another person or entity by assignment, merger or transmission. When such transfer happens, the party who acquires it gets a right to use the trademark. The acquiring party can use it according to the terms of the transfer. If all rights are transferred, the acquiring party can use it similarly as of the proprietor.
Assignment, according to the Act, means assigning the trademark in writing by the act of the concerned parties. Simply put, it is transferring of a trademark in writing by the proprietor or any person authorised by him to another person. A proprietor can assign the trademark of all his goods and services, or he can assign the trademark of only some of his goods and services. He can assign even goodwill of the business along with his trademark or assign only trademarks without goodwill. An unregistered trademark can also be assigned.
When two companies merge, the trademark of the merging company gets transferred to the merged company. This merger of the trademark between the companies constitutes an assignment.
A trademark is assigned with goodwill when the registered trademarks of goods or services are assigned along with the goodwill of the business concerned. If a trademark is assigned with relation to goods exported from India or services outside India along with the goodwill of the export business, it constitutes an assignment with goodwill.
A trademark is assigned without goodwill when only the trademark of the goods or services of a business are assigned. When an assignment of a trademark is made without the goodwill of a business, it is not valid unless the person to whom it is assigned makes an application to the Registrar. Such application should be made within six months to the Registrar for the advertisement of the assignment, and it is advertised in such form and manner as the Registrar directs.
According to the Act, transmission means the transfer of a trademark by operation of law or devolution on the personal representative of a deceased person, which is not an assignment. It implies a trademark is transferred from the proprietor to the other person by some reason of law, or his legal representatives on death. Any mode of transfer which is not by assignment is a transmission. Transmission can be relating to either some of the trademarks or all the trademarks in the goods and services. It can be with or without the goodwill of the business concerned.
A trademark cannot be assigned or transmitted when more than one person gets exclusive right to use the trademarks which are resembling or identical to each other and causes confusion to the public relating to the-
However, such trademarks can be assigned if the proprietor makes an application to the Registrar of Trademarks along with a statement setting out the circumstances and the Registrar issues a certificate stating that the proposed assignment is valid. The certificate issued is conclusive as to the validity of the assignment, if the person to whom it is assigned, applies to get the trademark registered in his name within six months from the date of issuing of the certificate by Registrar.
A trademark cannot be assigned or transmitted when one person gets exclusive right to use the trademarks relating to goods or services sold or given in India, and another person receives exclusive rights to goods or services sold or delivered outside India which confuse the public due to trademarks being resembling or identical to each other relating to the-
However, such trademarks can be assigned or transmitted, if the proprietor or person claiming the transmission, makes an application to the Registrar of Trademarks along with a statement setting out the circumstances and the Registrar issues a certificate stating that the proposed assignment or transmission is valid. The certificate issued is conclusive as to the validity of the assignment or transmission, if the person to whom it is assigned or the person claiming transmission, applies to get the trademark registered in his name within six months from the date of issuing of the certificate by Registrar.
When a person becomes entitled to a registered trademark through assignment or transmission, he should apply to the Registrar along with the proof of documents of such assignment or transmission to register it in his name. Form TM-P is the application sent to the Registrar. After going through the proof of documents, the Registrar will enter particulars of such assignment or transmission in his register. The entry in the register is proof of ownership of the trademark to the person assigned or transmitted.
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